KONTES GLASS COMPANY v. Lab Glass, Inc.

• Decision Date: 18 February 1966
• Docket Number: Civ. A. No. 1048-65.
• Citation: 250 F. Supp. 193
• Parties: KONTES GLASS COMPANY, Plaintiff, v. LAB GLASS, INC., Cenco Instruments Corporation, and Edward B. Brown, Defendants.
• Court: U.S. District Court — District of New Jersey

250 F. Supp. 193

KONTES GLASS COMPANY, Plaintiff, v. LAB GLASS, INC., Cenco Instruments Corporation, and Edward B. Brown, Defendants.

Civ. A. No. 1048-65.

United States District Court D. New Jersey.

February 18, 1966.

Tuso, Gruccio & Tuso, by Thomas Tuso, Vineland, N. J., and Seidel & Gonda, by Arthur H. Seidel, Philadelphia, Pa., for plaintiff.

Palese & Palese, by Donald Palese, Camden, N. J., and Paul & Paul, by James C. McConnon, Philadelphia, Pa., for defendants.

COHEN, District Judge.

Plaintiff, Kontes Glass Company (Kontes), a New Jersey corporation of Vineland, New Jersey, pursuant to Rule 65 F.R.Civ.P., moves before trial for a Preliminary Injunction enjoining defendants, Lab Glass, Inc. (Lab Glass), likewise a Vineland, New Jersey corporation, Cenco Instruments Corporation, a Delaware corporation with whom Lab Glass merged in April, 1965, and Edward B. Brown, President of Lab Glass, also of Vineland, New Jersey, from infringing upon plaintiff's alleged copyrights and trade-marks by their use of a catalog entitled "Lab Glass, Inc., Catalog 66." Plaintiff also seeks to prevent the defendants' further distribution of said challenged catalog as well as an order compelling the defendants to deliver all Catalogs 66 presently in their possession and to retrieve those which have been distributed, for impounding by the Court pending this suit. Additionally, plaintiff seeks similar relief regarding a 1960 catalog of Lab Glass, LG-60 and its Lab Kit Catalog LK-60.

The principal litigation involves alleged copyright infringement of plaintiff's trade catalog, entitled "Kontes Technical Glassware Catalog TG-20", by defendants' trade catalog known as "Lab Glass, Inc. Scientific Glassware & Research Apparatus Catalog 66." Both trade catalogs display scientific laboratory apparatus manufactured for sale throughout the United States. These catalogs, as do those of other competitors, service the trade in lieu of salesmen or manufacturers' representatives and are essential to their enterprises. Kontes and Lab Glass have been keen competitors over many years, but no patents restrictive of competition exist.

Plaintiff, for the purposes of this motion, makes 24 specifications of copying, in violation of its copyrights, and alleges as well, unfair competition and unauthorized use of its trade-mark names "Chromaflex" and "Duall."

Defendants oppose the complaint and resist the present motion, contending that Catalog 66 was compiled from their own prior catalogs, which were composed from various trade journals, including plaintiff's, all of which were uncopyrighted at the time of compilation and publication, hence in the public domain and available for unrestricted use by all the world. And further, that the words sought to be claimed as the subject matter of trade-mark, are not trade-marks as they are not in fact used as such by the plaintiff, but rather they are used merely as descriptive of the function of particular apparatus.

A hearing on the application for the Preliminary Injunction was held and testimony taken on 2 days. The matter was copiously briefed, and thereafter, on January 21, 1966, ably argued by counsel expert in this particular Art. Proposed findings of fact and conclusions of law, together with supplemental memoranda, have been submitted to assist the Court.

An examination of the record necessitates a brief statement of some historical background.

Laboratory glassware, such as is used in scientific research and industrial markets, was developed in Europe prior to World War I, as minature laboratory glassware called semimicro and micro glassware consisting principally of test tubes, burettes for titration and other such scientific glass apparatus. After World War II, this type glassware was produced by several manufacturers in this country, including Kontes and Lab Glass.

Sometime in the late 1940's, Kontes distributed copies of its uncopyrighted catalogs, using line-drawings to feature its micro glassware. In April of 1956, Kontes published a catalog featuring a new line of miniature laboratory glassware, known as "Bantam Ware", but did not register same with the Copyright Office until March 22, 1965, some 9½ years later. On February 6, 1957, it published Catalog TG-15, a greatly expanded catalog, twice the size of its earlier catalogs, bearing a copyright notice date of 1956, which likewise was belatedly registered with the Copyright Office on April 6, 1965. On April 22, 1958, plaintiff published Catalog TG-15A, characterized as an "updating of previous items", containing new additions and a revision of its prices. This was not registered with the Copyright Office until July 6, 1964. A Bantam Ware Catalog BW-2 was published in March, 1961, but not registered until June, 1964. In October, 1961 it issued a new edition of Catalog TG-15A, and registered same in July, 1964. The plaintiff's most recent and current catalog, TG-20, and the one here in suit, was published January 8, 1964 and registered with the Copyright Office in April, 1964. Plaintiff's catalogs fall into two groups, viz., those styled as "Bantam Ware", and those as "Technical Glassware." In only two of the eight registered titles is the word "Kontes" included.

Turning now to the catalogs of Lab Glass, it published its first catalog in 1960, entitled Catalog LG-60, illustrating glassware apparatus similar to that contained in previous catalogs of Kontes. In 1961 Lab Glass published an additional catalog, ML-61, for miniature laboratory glassware akin to Kontes' Bantam Ware, and this material was later in the same year included in a new catalog, LG-61. In September of 1965, Lab Glass published its current edition, Catalog 66, in a hard cover comprising over seven hundred pages of illustrations and textual material. This catalog was the result of preparation by the Walsh Advertising Agency artists, during 1964, based upon defendants' previous catalogs and new artwork, and was compiled at an out of pocket cost of more than $64,000.00, together with the expenditure of from 5 to 6 thousand man-hours.

Defendants contend that their LG-60 Catalog was compiled from catalogs, including plaintiff's, circulating in the trade not bearing copyright protection, this being a common practice and one in which the plaintiff itself engaged. Further, that Catalog 66 is an expansion of its previous catalog of items then and now in the public domain, because of prior publications, including plaintiff's publication and distribution of advertising bulletins and periodicals of similar items from 1955 to 1963, bearing no copyright notices. In defense of the charge levelled of trade-mark infringement, the defendants maintain that the words "Chromaflex" and "Duall" are not trademarks, but are merely descriptive of the flexibility of certain scientific apparatus manufactured by all trade competitors. Defendants urge that the issuance of a Preliminary Injunction to the extent sought by plaintiff would effectively eliminate them from the industry and wreak...